Increasing use of Inter Partes Reviews (IPRs) by patent stakeholders and an increase in the number of ITC complaints heighten the importance of an interplay between IPRs and ITC proceedings. We have previously noted that the ITC does not stay their proceedings in view of IPR institution. Recent decisions by the Patent Trial and Appeal Board (PTAB) bring to light another distinguishing feature of taking a patent dispute to the ITC – it will not start a one-year clock to file an IPR request.
In three decisions issued on the same day, the PTAB denied Robert Bosch Tool Corp.’s requests to institute IPRs of three patents owned by SD3. See Robert Bosch Tool Corp. v SD3, LLC, IPR2016-01751 (PTAB March 22, 2017), Paper 15; Robert Bosch Tool Corp. v SD3, LLC, IPR2016-01753 (PTAB March 22, 2017), Paper 15; Robert Bosch Tool Corp. v SD3, LLC, IPR2016-01754 (PTAB March 22, 2017), Paper 15. In two of these decisions (IPR2016-01751 and IPR2016-01753), the PTAB considered patent owner’s argument that “Petition [was] time barred under the plain meaning of 35 U.S.C. § 315(b), because Petitioner was served with an ITC complaint more than one year before the date [the] Petition was filed.” See, e.g., IPR2016-01753 (PTAB March 22, 2017), Paper 15, at 9.
The patents at issue have been asserted by SD3 and its subsidiary SawStop LLC against Bosch in Certain Table Saws Incorporating Active Injury Mitigation Technology and Components Thereof, Inv. No. 337-TA-965 (filed in July 2015) and in SawStop, LLC v. Robert Bosch Tool Corp., Case No. 3:15-cv-01320 (D. Or.). Parties asserting patent claims in the ITC often file complimentary district court complaints due to, inter alia, differences in remedies between the forums. Those filings do not have to be filed simultaneously. Bosch filed its IPRs on September 14, 2016, less than a year from being served in an Oregon action, but more than a year after the ITC action. The question naturally arises, are Bosch’s petitions subject to the one year litigation bar of 35 U.S.C. § 315(b).
The language of § 315(b) recites that “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.” In opposing the petitions, SD3 pointed to the heading of § 315(b) (“Patent Owner’s Action”) to argue that this section “should be interpreted to include both a civil action in a federal district court and a Patent Enforcement Action at the ITC.” IPR2016-01753 (PTAB March 22, 2017), Paper 15, at 9.
To support its argument, SD3 pointed to language in one of the prior PTAB opinions that discussed a relationship between ITC proceedings and a one-year bar for IPR request. In that opinion, the PTAB explained that “the drafters intended the triggering event of § 315(b) to be ‘tied to a pleading in litigation.’” IPR2016-01753 (PTAB March 22, 2017), Paper 15, at 10 (quoting Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 98, at 13 (PTAB January 31, 2014)) (emphasis in original). SD3 pointed out that the Federal Circuit “has consistently treated section 337 patent infringement proceedings as litigation.” Texas Instruments., Inc. v. Tessera, Inc., 231 F.3d 1325, 1330 (Fed. Cir. 2000). Therefore, according to SD3, PTAB’s own logic in Amkor “should not preclude ITC actions from falling within § 315(b).” IPR2016-01753 (PTAB March 22, 2017), Paper 15, at 10.
The PTAB “decline[d] to interpret § 315(b) as including ITC complaints.” Id. at 11. It cited several reasons for this conclusion. First, the very “title of § 315 is, ‘Relation to Other Proceedings or Actions.’” Id. Second, “[p]aragraph (e)(2) of § 315 specifically identifies an ITC investigation as a ‘proceeding,’ and separately refers to a ‘civil action.’” Id. Third, “§ 315(b) refers to ‘infringement,’ not to ‘patent enforcement.’” Id. Fourth, the PTAB argued that when Congress intended a provision of the AIA to apply to ITC proceedings, “it took care to recite ‘section 337’ in the body of the statute.” Id. (citing 35 U.S.C. §§ 257(c)(2)(B) and 325(e)(2)). Fifth, the PTAB pointed out that 35 U.S.C. § 257 relied on by SD3 “relates specifically to supplemental examination of patents before the Patent Office, not inter partes review.” Id. Finally, the PTAB referred to reasoning it used in previous decisions: LG Elecs., Inc. v. Straight Path IP Group, Inc., IPR2015-00196, Paper 20 (P.T.A.B. May 15, 2015); Brinkmann Corp. v. A&J Mfg., LLC, IPR2015-00056, Paper 10 (P.T.A.B. Mar. 23, 2015); Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 98 (P.T.A.B. Jan. 31, 2014). As a result, the PTAB “decline[d] to extend § 315(b) to cover ITC complaints.” IPR2016-01753 (PTAB March 22, 2017), Paper 15, at 12.
The traditional calculus of filing a district court litigation as a parallel action to an ITC complaint now has a new wrinkle. The delay between the institution of an initial ITC complaint and a subsequent district court action will not be counted toward barring later IPR petitions. The timing between parallel ITC and district court actions has added strategic importance.